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Last month the Trademark Trial and Appeal Board ("TTAB") made headlines when it reversed a Trademark Examining Attorney’s decision refusing registration of the mark MONTUSSAN. At issue in that case was whether the mark, which is the name of a small town nine miles away from Bordeaux, was “primarily geographically descriptive” within the meaning of Section 2(e) of the Trademark Act. In a short, acerbic opinion, TTAB found that Montussan is “obscure,” and thus the MONTUSSAN mark was not barred from registration under Section 2(e).

Now, two more trademarks that include the names of French regions are under dispute. LJC Wine Co., LLC’s LOIREGON and Southwest Winery Associates’ DOMAIN CHARLEMAGNE contain the names of designations of origin that are protected by French and European Community law. l’Institut National de L'Origine et de la Qualité ("INAO"), the French government agency responsible for establishing and policing the use of geographic indications, has opposed the registration of these marks, alleging that they are deceptive under the geographical indication clause of Section 2(a) of the Trademark Act.

The Marks

LOIREGON is a word play on one of France’s most celebrated wine regions, the Loire River Valley. Often referred to as simply “the Loire,” this region is recognized by UNESCO as a World Heritage Site. LJC Wine Co., LLC (“LJC”), an Oregon winery, has been selling a Loire-inspired Cabernet Franc wine under the LOIREGON mark since at least as early as July 2014 and applied for registration of the mark on the Principal Register on November 20, 2014. “Loire” is an Indication Géographique Protégée (Protected Geographic Indication, or "IGP"), and as INAO points out in its Notice of Opposition, there are numerous protected appellations within the region that contain the word “Loire.”

DOMAIN CHARLEMAGNE contains the name of a Appellation d'Origine Protégée (Protected Designation of Origin, or "AOP"). Charlemagne and Corton-Charlemagne are AOPs—both Grands Crus—located within the famous Côte de Beaune subregion of Burgundy. North Carolina wine wholesaler Southwest Winery Associates’ (“SWA”) has applied for registration of this mark on the basis of Section 1(b) of the Trademark Act, meaning that it has not yet used DOMAIN CHARLEMAGNE but intends to do so in the near future. SWA plans to use the mark to sell wine.

Grounds for Opposition

INAO opposes the registration of both LOIREGON and DOMAIN CHARLEMAGNE on the grounds of (1) geographic indication used on or in connection with wine identifying a place other than the origin of the product (under Section 2(a) of the Trademark Act)[1]; (2) priority and likelihood of confusion (under Section 2(d); (3) deceptive geographic misdescription (under Section 2(e)(3)); and (4) dilution (under Section 43(c). This post addresses only ground 1, geographic indication used in connection with wine.

Geographical Indication Under Section 2(a): The TMEP

Section 2(a) of the Trademark Act prohibits registration of marks that contain “a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines or spirits by the applicant on or after [January 1, 1996].” [15 U.S.C. § 1052(a).] Section 1210.08(a) of the Trademark Manual of Examining Procedure (“TMEP”), which contains guidance for trademark attorneys and examiners, provides, “[a] designation is considered a geographical indication under Section 2(a) if it identifies the applicant’s wines or spirits as originating in a territory known for a given quality, reputation, or other characteristic associated with wines or spirits.” [T.M.E.P. § 1210.08(a).] The TMEP explains:

A mark for wines or spirits that includes a geographical indication is unregistrable if: (1) purchasers would erroneously believe that the product originates in the relevant geographic area; and (2) the quality, reputation, or characteristic associated with wines or spirits from that area would materially affect the purchaser’s decision to buy the goods.

To establish a prima facie case for refusal to register a mark under the “wines and spirits” provision of §2(a), an opposer must show the following

(1) The primary significance of the relevant term or design is geographic, e.g., a place name, abbreviation, nickname, or symbol; or an outline or map of a geographic area;(2) Purchasers would be likely to think that the goods originate in the geographic place identified in the mark, i.e., purchasers would make a goods/place association;(3) The goods do not originate in the place identified in the mark;(4) A purchaser's erroneous belief as to the geographic origin of the goods would materially affect the purchaser's decision to buy the goods; and(5) The mark was first used in commerce by the applicant on or after January 1, 1996.

Primary Significance

It seems clear that the primary significance of “Loire” is geographic. The Loire River Valley is an identifiable geographic region and, probably for a fair number of Americans, the first thing that comes to mind upon hearing or reading the term “Loire.” The primary significance of “Charlemagne,” on the other hand, is not so clear. King Charlemagne, also known as “Charles the Great,” was the first Holy Roman Emperor and one of the most important figures in Western European history. He is the namesake of the AOPs Charlemagne and Corton-Charlemagne. For Americans, most of whom study world history in grade school, “Charlemagne” probably conjures up images of a bearded medieval conqueror, not an idyllic village in France. I doubt that many of us are familiar with the Burgundian sub-region of Charlemagne. Thus, while both the Loire and Charlemagne are geographic regions, it is unclear whether the “Charlemagne” AOPs will pass the “primary significance” test.

Goods/Place Association

Would purchasers of Loiregon of Domain Charlemagne wines be likely to think that these wines originated in the Loire Valley or in one of the Charlemagne AOPs? For TTAB, the key to answering this question is whether these regions are “known for a given quality, reputation, or other characteristic associated with wines or spirits.” The TMEP advises that names of “[o]bscure areas or those that do not have a reputation or other characteristics generally associated with wines or spirits should not be prohibited from registration.” [T.M.E.P. § 1210.08(a).] And lest opposers pontificate on the meaning of "obscure," the TMEP further advises: “[r]emoteness or obscurity is determined from the perspective of the average American consumer” for claims under both Section 2(a) and Section 2(e) of the Trademark Act. [T.M.E.P § 1210.04(c) (emphasis added).]

So are the Loire Valley and the Charlemagne regions "known to the average American consumer for a given quality, reputation, or other characteristic associated with wines or spirits"? To wine lovers who suffer from the Curse of Knowledge, it’s hard to imagine anyone not knowing about Loire Valley wines. In the wine world, they’re icons. The average American consumer might never have heard of the Loire, however, and many who have might be unaware of its reputation for racy Sauvignon Blanc and earthy, vegetal Cabernet Franc. Charlemagne and Corton-Charlemagne wines will likely fare worse before TTAB. While these regions are are known to oenophiles for producing elegant, highly sought-after Chardonnay, I suspect that these AOPs are less known to the “average American consumer."

In a 2013 case, however, TTAB ascribed a relatively high degree of knowledge to U.S. consumers based on the availability of information about the AOP system on the Internet. Ín that case, In re AOP, LLC [107 USPQ2d 1644 (TTAB 2013)], the Examining Attorney had refused to register the mark AOP for use on wines[2] under the first clause of Section 2(a). Although the case is not exactly on point—the mark AOP did not identify a geographic region—it illustrates the flexibility with which TTAB may apply certain tests.

Material Erroneous Belief

If a purchaser in fact believed an LJC wine to be from the Loire Valley (or an SWA wine to be from Burgundy), would this belief “materially affect the purchaser's decision to buy the goods”? For this prong, the TMEP refers practitioners to Section 1210.05(c). Section 1210.05(c)(i) provides:

. . . [T]o establish the materiality element for goods, the evidence must show that:

The place named in the mark is famous as a source of the goods at issue;The goods in question are a principal product of the place named in the mark; orThe goods are, or are related to, the traditional products of the place named in the mark, or are an expansion of the traditional products of the place named in the mark.

[T.M.E.P § 1210.05(c)(i).] Section 1210.05(c)(i) also advises that “[i]f . . . there is evidence that the relevant goods, or related goods, are a principal product of the geographical area named by the mark, then the deception will most likely be found to be material.” [Id.]

“Principal product”is not defined, but the Loire Valley would seem to pass this test. The Loire is France’s third-largest wine region with 70,000 hectares under vine. In 2013, the Loire Valley AOPs produced 2,630,000 hectolitres (69,480,000 gallons) of wine. “Famous” is not defined, either, but at least to oenophiles, the Loire Valley is famous for wine. Finally, the product at issue, wine, is a traditional product of the Loire, as winemaking in this region can be traced back to the First Century.

Corton-Charlemagne, a much smaller region, produced 2,280 hectolitres of wine in 2012. I could not find reliable production data for Charlemagne. These AOPs are known in the wine world for fine wines, and wine production can be traced back to the Ninth Century, thanks to their namesake emperor.

First Use in Commerce

Both LOIREGON and DOMAIN CHARLEMAGNE meet the first use requirement. LOIREGON was first used by SJC around 2014, while DOMAIN CHARLEMAGNE is not yet in use.

Implications

It is unclear whether LOIREGON and DOMAIN CHARLEMAGNE will pass the Section 2(a) geographical indication test, in part because of a lack of information in this particular case and in part because Section 2(a) geographical indication challenges are rare. In fact, the only case that I could find that was decided on the merits is not precedential. In addition, throughout the TMEP, Section 2(a) is treated like Section 2(e). If the Examining Attorney and TTAB reach the merits of the geographical indication claim, it will shed light on this new part of Section 2(a). Will all protected designations have to become household names, like Champagne? Will AOP be presumed not to be obscure, making them off-limits in the USPTO? Is there a workable middle ground? A decision on the merits regarding LOIREGON and DOMAIN CHARLEMAGNE could answer these questions.

[1] This section of the Act was amended in 1994 by the enactment of the Uruguay Round Agreements Act, which took effect on January 1, 1996.

[2] TTAB did not mention the “geographical indication” clause in its decision, nor did it apply the “materiality” test. The TMEP characterizes the decision as “holding AOP deceptive for wine, where the term is used by members of the European Union to designate a particular quality and geographical origin of wine, when applicant is not the entity that administers the designation and the goods do not necessarily originate in Europe.” In AOP, TTAB cited In re Quady Winery [221 U.S.P.Q. 1213 (TTAB 1984)],a case that predates the geographical indication amendment by about a decade. In that case, TTAB advised, “The fact that there may be a relatively small number of prospective purchasers who are knowledgeable of the original . . . is not determinative. Even if the group would not be large, it is still the proper universe for our consideration.” Compare this with the TMEP’s guidance on obscure places.

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